Appeal No. 1998-0821
Application 08/175,319
over Franklin in view of Malka.
Rather than reiterate the arguments of Appellants and the Examiner, reference is
made to the briefs and answer for the respective details thereof.
OPINION
We will not sustain the rejections of claims 20 and 21 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It is the burden of the
Examiner to establish why one having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re Sernaker, 702 F.2d 989,
995, 217, USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-0rdnance Mfg. v. SGS Importer
Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied,
519 U.S. 822 (1996), citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On page 5 of the brief, Appellant argues that Appellant's claim 20 requires
storing the servo parameters (comprising at least one of system
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